By Keith Loven
No, I don’t mean the sort of thing where you try to put up shelves and end up drilling through a buried cable in the wall! I’m referring to an issue which has come up a couple of times in the last week relating to the handling of trademarks.
These were both examples where companies’ trademarks had been handled in-house and this had led to problems.
In the first example, the client had registered a couple of trademarks a few years back and wanted to know whether they needed additional protection now they were branching into online retailing as a result of the effect the Pandemic is having on their usual business. The trademarks had been handled by a director of the company, who had now moved on. The person now tasked with getting the additional protection in place was not sure what the company had and what its status was.
Looking at what they had, I found that, while the former director may well have saved the company the modest cost of professional fees, he had actually registered for a range of classes the company did not use the mark on, so wiping out the saving, and had only registered a logo form of the mark, when the company’s position would have been stronger just registering the name the company was known by. This is potentially important because of a conflict with another company seeking to register a closely similar trademark.
The second example was also from a company where one director had handled the trademarks personally, and in this case had retired a few years ago. The current directors wanted again to extend protection to new online activities, and it turned out that their existing registration had not been renewed when it became due a couple of years ago.
We all want to keep down costs in business, but trademark registration, like many legal issues, is not as straightforward as it seems; there are pitfalls for the unwary that can prove very costly in the long run. Apart from making sure that a company’s trademark registrations are as legally effective as they can be, one service that trademark attorneys provide is to act as “address for service”, receiving all official notifications and making sure that the company is made aware of any matters requiring action.
They can also offer watching services to alert the trademark owner of any attempt by others to register a trademark that comes too close. This is important if the value of the trademark is to be maintained.
Trademarks can be very valuable assets of a business, if handled properly. If you would like a free initial review of your company’s trademarks, call us on 01522 801111 today.